Messner, Joseph

Patent Trials and Appeals BoardAug 27, 2020

14315262 - (D) (P.T.A.B. Aug. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/315,262 06/25/2014 Joseph Messner P00767DIV 6713 87598 7590 08/27/2020 Morgan Law Offices, PLC 4635 S. Lakeshore Dr. Suite 131 Tempe, AZ 85282 EXAMINER WAGNER, JENNY L ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 08/27/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USPTO@dockettrak.com docket@patentaz.com info@patentaz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEPH MESSNER Appeal 2019-005401 Application 14/315,262 Technology Center 2800 ____________ Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 1, 3, 4, 6–8, 10, 11, and 13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the named inventor, Joseph Messner. Appeal Brief dated July 5, 2018 (“Appeal Br.”) A2. Appeal 2019-005401 Application 14/315,262 2 CLAIMED SUBJECT MATTER The present application generally relates to a sun shield for shielding outdoor electrical equipment from sunlight. Specification filed June 25, 2014 (“Spec.”) ¶ 5. The Specification teaches that “[p]referably, the sun shield is formed by bending a single sheet of substantially flat metal, most preferably, stainless steel.” Id. ¶ 8. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with certain limitations bolded for emphasis: 1. A sunlight protection system, comprising: an inverter installed on an outside of a building; and a sun shield attached to a cover of the inverter; wherein the sun shield comprises a piece of sheet metal bent so as to have a sheet metal front structured and arranged to shield a front portion of the inverter; a pair of slanted sheet metal sides, the pair of slanted sheet metal sides structured and arranged to shield respective side portions of the inverter; and a slanted roof, the slanted sheet metal roof having an opening and positioned at an acute angle to shield a top portion of the inverter; wherein when mounted to the cover, an air gap of at least one inch in width exists between the sun shield and the front portion of the inverter, the air gap extending continuously from the bottom of the inverter to the opening in the slanted sheet metal roof creating an air flow path. Appeal Br. A7 (Claims App.) (reformatted for clarity) Appeal 2019-005401 Application 14/315,262 3 REFERENCES The Examiner relies upon the following prior art: Name Reference Date Getter US 4,872,102 Oct. 3, 1989 Tessmer US 5,499,734 Mar. 19, 1996 Storck US 8,089,747 B2 Jan. 3, 2012 Knaup WO 2009/068092 A1 June 4, 2009 REJECTIONS The Examiner maintains the following rejections: 1. Claims 1, 3, 4, 10, 11,2 and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Knaup. Non- Final Action dated May 18, 2017 (“Non-Final Act.”) 3–5. 2. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Knaup in view of Getter. Id. at 5–6. 3. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Knaup in view of Tessmer. Id. at 6–7. 4. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Knaup in view of Tessmer and further in view of Storck. Id. at 7. 2 Claim 11 is omitted from the statement of rejection but is included in the text of the rejection. Non-Final Act. 3, 5. Accordingly, we construe the omission from the statement of rejection as a typographical error. Appeal 2019-005401 Application 14/315,262 4 DISCUSSION Rejection 1. The Examiner rejects claims 1, 3, 4, 10, 11, and 13 as obvious over Knaup. Non-Final Act. 3–5. In support of the rejection, the Examiner finds that Knaup teaches “a sun shield (2, cover) . . . wherein the sun shield (2) comprises a piece of sheet metal (paragraph [0014]) bent (see figure 4) so as to have a sheet metal front . . . [and] a pair of slanted sheet metal sides (see figure 4 and [0014]).” Id. at 3. Knaup teaches that “when the color [of the cover] is silver, it can be the natural color of a metal such as aluminium forming the cover.” Knaup3 at 4. Appellant argues that Knaup fails to teach a sun shield comprising “a piece of sheet metal bent” as claimed. Appeal Br. A4. Appellant similarly contends that “the inverter of Knaup does not have any cover or sun shield that can fairly be said to be constructed from bent sheet metal.” Id. Appellant argues that “sheet metal” is defined as “metal formed into thin sheets, typically by rolling or hammering.” Id. In the Answer, the Examiner finds that “Figure 4 [of Knaup] . . . clearly shows that sun shield (2) is a flat aluminum sheet that is bent on the sides . . . and also comprises a front aluminum sheet structure.” Examiner’s Answer dated Oct. 1, 2018 (“Answer”) at 3–4. The Examiner further determines that rolling and hammering are merely metal working methods. We find the Examiner’s reasoning to be persuasive. Knaup refers to an embodiment with “aluminium forming the cover.” Knaup 4. 3 In the Non-Final Action, the Examiner cites to Knaup by paragraph number. Knaup (WO 2009/068092) does not have numbered paragraphs. Appeal 2019-005401 Application 14/315,262 5 Accordingly, Knaup teaches that the cover may be metal. Appellant appears to concede this in stating that “the color of the metal is not relevant to the issue as to whether the cited reference discloses ‘a piece of sheet metal bent’ in the recited manner.” Appeal Br. A5 (emphasis in original). The Examiner further finds that Knaup’s Figure 4 depicts a flat aluminum sheet that is bent on the sides. Answer at 3–4. Appellant does not meaningfully contest this finding. We further adopt the Examiner’s reasoning regarding Appellant’s proposed construction of sheet metal to mean metal formed into sheets by “rolling or hammering.” The claims are directed to an apparatus (a sunlight protection system). It has long been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellant has not provided convincing evidence of a patentable difference in structure between the apparatus of claim 1 and that suggested by the prior art. See Burr v. Duryee, 68 U.S. 531, 570 (1863) (“A machine is a concrete thing, consisting of parts, or of certain devices and combination of devices.”). Accordingly, we determine that Appellant has not shown error in the Examiner’s rejection of claim 1. As Appellant relies upon the same arguments discussed above with regard to the rejection of claims 3, 4, 10, 11, and 13 (Appeal Br. A5), we similarly determine that Appellant has not shown error in the Examiner’s rejection of those claims. Rejections 2–4. Claims 6, 7, and 8 were rejected under 35 U.S.C. § 103 over Knaup in view of certain additional references. Appellant does not submit separate argument in support of the patentability of these claims. Appeal 2019-005401 Application 14/315,262 6 Appeal Br. A3–A5. Accordingly, consistent with our analysis above, we determine that Appellant has not shown error with respect to these rejections. CONCLUSION The Examiner’s rejections are affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 10, 11, 13 103(a) Knaup 1, 3, 4, 10, 11, 13 6 103(a) Knaup, Getter 6 7 103(a) Knaup, Tessmer 7 8 103(a) Knaup, Tessmer, Storck 8 Overall Outcome 1, 3, 4, 6–8, 10, 11, 13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED